Fanatics vs FanFirm: When Coexistence Crashes and Burns

It started as a quiet coexistence. Two brands using the word “Fanatics” in the sports and merchandise space, each seemingly steering clear of the other for over a decade. But by 2020, the truce had well and truly collapsed. Now, the Full Federal Court has delivered a strong decision in Fanatics, LLC v FanFirm Pty Ltd [2025] FCAFC 87 — and it’s a must-read for anyone dealing with overlapping trade marks, online retail, or the limits of trade mark use in a digital age.

Here’s what you need to know.

🧵 The Threads of the Dispute

FanFirm, the Aussie original, had been rallying sports fans and running tours under the “Fanatics” banner since the late 1990s. It registered trade marks in 2008 for FANATICS in a wide range of goods and services, from clothing to banners to event transport.

Fanatics LLC, the US giant, started out as “Football Fanatics” in the mid-1990s and evolved into a global sportswear and merchandise powerhouse. It registered its own FANATICS marks (including “Fanatics Branded” goods) and entered the Australian market — at first passively, but from 2020, actively and visibly, including partnerships with Rebel Sport and the AFL.

The court fight? Predictable. Both sides alleged infringement, bad faith, cancellation grounds, and even misleading conduct.

🥊 The Issues in Play

This case had it all:

Was “Fanatics” used as a trade mark on swing tags, care labels, and websites?
Were water bottles and towels “goods of the same description” as those covered by FanFirm’s registrations?
Could Fanatics rely on honest concurrent use, good faith own name use, or section 122(1)(e) defences?
Should the register be rectified — and on what grounds?

🧠 The Big Takeaways

✅ Not All Label Use is Trade Mark Use

The Full Court said swing tags and care labels seen only post-sale aren’t trade mark use. Context matters. If a consumer doesn’t see the mark before or during the purchase process, it probably doesn’t function as a badge of origin.

✅ Website Branding ≠ Automatically Use in Respect of Goods

The court drew a subtle but important line: just because a site is branded “Fanatics” doesn’t mean every third-party product on it is offered under the Fanatics brand.

❌ Honest Concurrent Use Defence? Not Here.

Fanatics LLC couldn’t make out honest concurrent use under s 44(3) because their later Australian use didn’t align with the statutory requirements. And crucially, s 58 (ownership) and s 60 (reputation) weren’t fatal to Fanatics’ defence in every case — a nuance the court clarified.

✅ Rectification Sticks — Mostly

Fanatics’ marks were rightly removed for Class 35 services. But FanFirm also lost parts of its own registrations in classes where it had no real use.

🧾 Ultimate Result in Fanatics v FanFirm [2025] FCAFC 87

The Full Federal Court handed down a mixed outcome, but overall:

FanFirm largely succeeded — it retained core rights and secured findings of infringement.
Fanatics LLC lost several key marks in Australia and was restrained from using its brand in relation to certain goods.

✅ So What Was the Result?

Here’s a summary of what each party got:

Party	Outcome Summary
FanFirm	✔ Won on infringement (Fanatics LLC infringed FanFirm’s mark via care labels, swing tags, website use) ✔ Injunction restraining Fanatics from use of “Fanatics” for relevant goods ✔ Fanatics’ marks in Class 35 (retail services) were cancelled ✖ But some of FanFirm’s marks were also partially cancelled (e.g. in Classes 9, 16, 32, 38) for lack of use
Fanatics LLC	✖ Found to have infringed ✖ Lost Class 35 trade mark registrations ✖ Failed to establish good faith use, honest concurrent use or ownership ✖ Could not enforce its own marks (they were cancelled) ✔ But escaped some infringement findings where website branding or care labels didn’t amount to “use as a trade mark” under the law

Bottom line:
→ FanFirm retains its core branding rights and has an injunction protecting them.
→ Fanatics LLC’s Australian presence is legally constrained — it can’t rely on key marks and can’t use “Fanatics” branding on some goods without infringing.

🚦 Do’s and Don’ts from the Case

✅ DOs:

Ensure chain of title and ownership of your trade mark is clean and documented. Several defences failed because Fanatics LLC couldn’t prove ownership or valid licensing chains.
Gather clear evidence of use before asserting reputation-based grounds (s 60) or defending against cancellation.
If operating side-by-side with another similar brand, consider a formal coexistence agreement. Coexistence without clarity turned out badly here.
Apply for trade marks early — especially when entering new markets.
Monitor competitors and object to problematic filings — but be strategic. FanFirm had earlier opposed Fanatics’ marks but didn’t resolve the broader issues, which boiled over later.

❌ DON’Ts:

Don’t assume a domain name or care label equals trade mark use. Post-sale brand references on swing tags and return packaging aren’t “badges of origin” under the Self Care principles.
Don’t rely on honest concurrent use or good faith own name use if your use wasn’t clearly visible and legally compliant from the start. These defences are narrow.
Don’t expect trade marks to coexist forever without tension, especially as businesses expand their offerings or enter new markets.
Don’t treat rectification and cancellation claims lightly. They can be decisive — Fanatics lost the rights it was trying to enforce.

🤯 Why This Case Matters

This isn’t just a blow-by-blow between two sports fan brands. It’s a comprehensive masterclass in modern trade mark enforcement and defence. It shows:

How coexistence can come undone.
The evidentiary thresholds for honest concurrent use and reputation-based objections.
The limits of “use” in digital retail environments.

💡 For Brand Owners

If you’re:

Expanding globally,
Using overlapping names with legacy players, or
Selling goods online through multi-brand platforms…

…this case is your compliance checklist and your litigation warning all in one.